table of contents
1. How the amended claims 4 and 7 were obtained in this case
2. The question of whether it can be used as the basis for examination based on whether it is an "unmodified claim".
3. Why the hypothetical new right 4' should not be accepted, while the actual new right 4 should be accepted, also as an unmodified claim
4. If the new right4 in this case is not accepted, what undue losses will be incurred for the patentee?
5. The result is more reasonable to judge based on the "responsive requirements" of the "requirements for the purpose of revision" specified in this case
VI. Conclusion
In the patent confirmation procedure, the patentee can amend its claims by means of "further restrictive" amendments, but whether the amended claims can be accepted as the basis for examination often becomes one of the focus issues and is therefore an issue of widespread concern.
On May 9, 2024, the Intellectual Property Tribunal of the Supreme People's Court published on the WeChat official account of the People's Court the cases selected in the case database of the People's Court (hereinafter referred to as the "Cases"), which involved the (2021) Zui Gao Fa Zhi Xing Zhong No. 556, 581 and 738 cases, and at the same time as the release of the cases, the titles of "Examination of 'Further Restrictive' Amendments in Patent Confirmation Procedures; Responsive Requirements for Claim Modifications in Patent Confirmation Procedures" were published. This article introduces the case (hereinafter referred to as the "Case Introduction").
In the introduction of the case, the Supreme People's Court clearly held in its adjudication opinion that "the amended claims 4 and 7 are the original claims of the patent, not new claims formed by amendment, and they are the natural basis for examination, and there is no problem that they cannot be accepted due to the so-called amendment." The respondent's decision to reject the amended claims 4 and 7 and thus exclude them from the examination basis lacks factual basis. It is based on this opinion that the effective judgments of the three cases of the Supreme Court Zhi Xing Zhong No. 556, 581 and 738 revoke the decision of the first-instance judgment and the sued decision to invalidate claims 4 and 7 and claims 8-10 cited in claims 4 and 7 of this patent.
It is particularly noteworthy that this case introduces the above conclusions based on the effective judgments of the above three cases, and gives a guiding adjudication opinion: "It is worth noting that in the patent confirmation procedure, the unmodified claims are the natural basis for examination, and they do not constitute the object of evaluation of the statutory or other restrictions on the amendment of the claims. ”
With regard to this guiding adjudication opinion, it can be understood that in the patent confirmation procedure, when judging whether the amended claim should be accepted as the basis for examination, an absolute judgment can be made based on whether the relevant claim is an "unmodified claim".
In this case, the amended claims 4 and 7 are indeed the original claims of the patent, not the new claims formed by the amendment, and the author also believes that they should be accepted as the basis for examination, but whether the reason for the acceptance is naturally attributable to the original claims and not the amended claims can be further discussed.
Can "unamended claims" be used as a basis for examination? In the author's opinion, there seems to be some imprecision in this guiding adjudication opinion, because in some specific circumstances, there will be certain problems as an absolute judgment standard. The following is an expanded description.
1. How the amended claims 4 and 7 were obtained in this case
In this case, the original claims included multiple sets of claims, taking the first group of claims as an example, exclusive right 1 included claims 2-8, a total of 7 dependent claims. Their reference relationship is shown in Figure 1(A).
(A) Before Modification
(B) Modified
Figure 1 Claim tree of the first set of claims
IN THE AMENDED CLAIMS, THE FIRST GROUP OF CLAIMS IS MODIFIED FROM THE ORIGINAL CLAIMS 1-8 TO NEW CLAIMS 1-4, AND THE REFERENCE RELATIONSHIP IS SHOWN IN FIGURE 1(B). Among them, the new right 1 and the new right 4 are both independent rights, the new right 1 is the additional features of the original right 2, 4, 6 and 7 merged into the original right 1, and the new right 4 is the additional features of the original right 3 merged into the original right 1 (the new right 4 is the original right 3, which is the main basis for the Supreme People's Court to revoke the first-instance judgment and the sued decision).
After the amendment, the reason why the serial number of the original right 3 is changed from 3 to 4 is that the indirect subordinate rights of the original right 2 (original right 5 and original right 8) are used as the direct subordinate rights of the new right 1, and the serial numbers 2 and 3 are used respectively, so the exclusive rights of the original right 3 after the rise are also sorted backwards to the new right 4.
New Rights 7 is obtained in a similar way to New Rights 4 and will not be explained here.
2. The question of whether it can be used as the basis for examination based on whether it is an "unmodified claim".
If the new right 4 in this case is not the original right 3, but the original right 2, or the original right 4, or even the original right 1 (in order to distinguish it from the actual new right 4, it can be called "new right 4'" here), then the new right 4' at this time is still an "unmodified claim", that is, the original claim, according to the above-mentioned guiding judgment opinion of the Supreme People's Court, it is obvious that the new right 4' should be the "basis of examination of course", and does not constitute the object of evaluation of the statutory or other restrictions on the modification of the claims. In other words, there is no need to make a judgment at all, and it should naturally be accepted as the basis for review.
However, at this time, Xinquan 4' actually conflicts with the following adjudication opinions in the introduction of the case.
In the adjudication opinions introduced in this case, it is emphasized that "whether the amendment of the claims should be accepted involves at least the following aspects: First, the requirement on the scope of amendment. …… The second is the requirement for the modification method. …… The third is the requirement for the purpose of revision. The patent confirmation procedure is a procedure to test the legitimacy of the grant based on the grounds of invalidation after the claim has been granted due to a request for invalidation filed by another party. It is neither a comprehensive review procedure for the legitimacy of authorization, nor an optimization procedure for claim drafting. Therefore, the amendment of claims in the patent confirmation procedure shall generally be limited to responding to the reasons for invalidation (including the reasons for invalidation or supplementary evidence submitted by the applicant for invalidation and the reasons or evidence for invalidation not mentioned by the applicant for invalidation introduced by the State Intellectual Property Office). Amendments that optimize the actual drafting of claims, i.e., non-responsive amendments, in the name of overcoming the defects referred to in the grounds for invalidation, may not be accepted because they do not conform to the institutional positioning of the patent confirmation procedure. Otherwise, it is not difficult to imagine that once a non-responsive amendment is acceptable, the patent confirmation process will inevitably be alienated into a tool to obtain additional post-grant opportunities to optimize claim drafting. This is not conducive to improving the quality of drafting from the beginning of drafting and granting, nor is it conducive to the real role of the invalidation request procedure, and will also lead to an imbalance in the interests of the public including relevant stakeholders after the grant of the patent. Therefore, non-responsive amendments may not be accepted, even if they do not exceed the so-called "scope of information" and "scope of protection" and fall within the scope of amendments permitted by the Patent Examination Guidelines. For example, if the amendment of a claim lacks a request for invalidation and a reason corresponding to the amendment, it is generally not necessary to review the scope and method of amendment and simply reject it. For another example, in the same administrative review procedure, when the reason for invalidation of a claim has been responded to by amending the claim, and the amended claim has been accepted, the other modification of the original claim and the corresponding acquisition of more new claims may not be accepted because there is generally no longer a target for response. ”
In the case of the assumption that new right 4' is the original right 1, since the reason for invalidation of the original right 1 has been completed by merging the additional features of the original right 2, 4, 6 and 7, and the new right 1 is obtained by this, and the new right 1 has been accepted, it is clear that retaining an unmodified original right 1 as the new right 4' is equivalent to a separate amendment to the original right 1 and more new claims obtained accordingly. Since the original right 1 no longer exists as the object of the response when the new right 1 is accepted, the new right 4' should not be accepted at this time. In other words, new right 1 and new right 4' (i.e., original right 1) can only accept one, either new right 1 or new right 4' (i.e., original right 1), and cannot accept both new right 1 and new right 4' (i.e., original right 1) at the same time.
In the case of the assumption that new right 4' is original right 2 or original right 4, in the same way, since the grounds for invalidation of original right 1 have been responded to by merging the additional features of original rights 2, 4, 6 and 7, and the new right 1 is obtained, that is, the additional features of original right 2 and original right 4 have been used together to further qualify the original right 1 to obtain the new right 1, and the new right 1 has been accepted, At this time, if an unmodified original right 2 or original right 4 is retained as the new right 4', this is essentially equivalent to using the additional features of the original right 2 or the original right 4 to make an additional further restrictive modification of the original right 1, and in this case, the new right 4' is obviously obtained by using different combinations of other claims to obtain the original right 1, and the result of such additional modification is to obtain more new claims accordingly. Since the original right 1 no longer exists as the object of the response when the new right 1 is accepted, the new right 4' should also not be accepted at this time.
It can be seen that the determination that "unamended claims" is the "ex officio basis for examination" may be problematic in practice, at least in some cases, and may lead to a diametrically opposed conclusion when considering the "responsive claim" in the "request for the purpose of amendment".
3. Why the hypothetical new right 4' should not be accepted, while the actual new right 4 should be accepted, also as an unmodified claim
In this regard, we may wish to review the process of obtaining the new right 4 and see whether it was done in response to the grounds for invalidation.
In the original claims in this case, the original right 2 and the original right 3 are both parallel subordinate rights that directly refer to the original right 1, and they can be considered to be different embodiments. The other original subordinate rights 4, 6 and 7 used to further define the new right 1 are all referenced to the original right 2 and are not referenced to the original right 3, so it can be seen that the original rights 4, 6 and 7 belong to the same embodiment or are further embodiments on the basis of the original right 2, but they are different embodiments from the original right 3. It can be seen from this that the new right 1 and the new right 4 are actually different embodiments.
However, if the patentee's modification of the first set of claims seems to have further limited the original right 1 twice, and obtained two new independent rights, the new right 4 is indeed suspected of amending the original right 1 and obtaining more new claims.
Step 1: In response to the reason for invalidation that the original right 1 does not have novelty and inventive step, the original claim 1 is deleted, and at this time, the parallel slaves 2 and 3 are respectively upgraded to independent claims, where the original right 3 is raised to obtain the new right 4;
Step 2: In order to respond to the reason for invalidation that the original right 2 does not have novelty and inventive step, the original right 2 is further qualified by using the further subordinate rights 4, 6 and 7 of the original right 2 to obtain the new right 1.
It can be seen that in this case, the two new exclusive rights, new right 1 and new right 4, were actually obtained based on the deletion of original right 1, so that the juxtaposed slaves corresponding to different embodiments were elevated to new exclusive rights, and they were the result of the same response to the reason for invalidation that the original right 1 did not have novelty and inventive step. Therefore, the amendments of the new right and the new right 4 are not only in line with the "responsive requirement" in the "third, the requirement on the purpose of amendment", but also in line with the other two points emphasized in the adjudication opinion, "one is the requirement on the scope of amendment" and "the other is the requirement on the method of amendment", so they should be accepted as the basis for review.
In particular, since the other claims used to further define the two rights were not duplicated between each other in the process of obtaining the amendment of the new right 1 and the new right 4, and of course, there was no repeated amendment of the original right 1 by different combinations of other claims, so it was clear that there was no situation in which the patentee obtained more new claims in this case, and the patentee did not obtain undue benefits as a result.
Further, in the case of new right 4, assuming that it is not simply obtained directly from the elevation of the original right 3 to an independent claim, but on the basis of the elevation of the original right 3 to an independent right, it is further qualified by other claims, for example, the additional feature of the original right 7 is added (in this case, in order to distinguish it from the actual new right 4 and the new right 4' assumed above, it can be called the new right 4"), then since the new right 4 at this time "is to respond to the reason for invalidation that the original right 3 does not have novelty and inventive step." , which is not fundamentally different from the actual purpose of the amendment of the new right 4 in this case, and therefore still meets the "third requirement on the purpose of amendment" emphasized in the adjudication opinion; The method of amendment only includes the deletion of claims and the further limitation of the two permitted modification methods, so it still meets the requirements of "the second is the method of amendment" emphasized in the adjudication opinion; If the original right 7 and the original right 3 can be superimposed, and this superposition does not exceed the scope, then it is in line with the "first, the requirements on the scope of modification" emphasized in the adjudication opinion. It can be seen that although this hypothetical new right 4 is no longer the original "unmodified" claim, but a modified claim, the author believes that it should still be accepted as the basis for examination. This can also further confirm that the new right4 should be accepted as the basis for examination, and the fundamental reason is not that it is an "unmodified claim", but that the scope of the amendment, the scope of the amendment, and especially the purpose of the amendment are all in accordance with the relevant provisions of the Patent Examination Guidelines.
4. If the new right4 in this case is not accepted, what undue losses will be incurred for the patentee?
As mentioned above, New Right 1 protects embodiments of Original Right 2, while New Right 4 protects embodiments of Original Right 3, i.e., New Right 4 actually protects embodiments that are different from New Right 1. In this case, if new right 1 is accepted, new right 4 will inevitably not be accepted, then there will be the following disadvantages for the patentee:
(1) When different parallel attachments involve alternative embodiments that cannot be superimposed, once the patentee uses a subordinate right involving one embodiment to further limit the exclusive right in the invalidation procedure, the only way out for the other subordinate rights involving other alternative embodiments is to be deleted. Since the patentee has no chance to divide the case at this time, it can only throw away the other alternative embodiments in vain, regardless of the inventiveness and commercial value of the other alternative embodiments.
(2) When different parallel slaves involve embodiments that can be superimposed, once the patentee uses one of the parallel slaves (called "subordinate A" for the sake of description) to further limit the exclusive right to obtain a new right 1 in the invalidation procedure, the remaining parallel slaves will face two ways out: either being deleted or changing to a new subordinate right 1 (i.e., changing to a subordinate right A and further reducing the scope of protection). If the subordinate right A and the rest of the parallel subordinate rights are inventive in themselves, then both of these options will undoubtedly have a negative impact on the scope of the patentee's rights.
It can be seen that the direct rejection of the new right4 as the basis for examination will indeed cause undue losses to the patentee, which is contrary to the main purpose of encouraging the protection of innovation.
5. The result is more reasonable to judge based on the "responsive requirements" of the "requirements for the purpose of revision" specified in this case
In the patent confirmation procedure, after the patentee amends the claims, the number of new independent claims increases, which can be roughly divided into two categories: one is that the original exclusive right 1 is deleted, and its parallel subordinate rights are upgraded to new exclusive rights, resulting in an increase in the number of new exclusive rights; The second is that the patentee has made several further restrictive amendments to the exclusive right 1 by different combinations of other claims, resulting in an increase in the number of new exclusive rights.
In the second case, it is not disputed that the new exclusive right should not be accepted because it does not meet the "requirement of the purpose of the amendment" specified in the case. This is the case with the previous hypothetical New Rights 4' and New Rights 4'.
In case A, after the original parallel subordinate rights are upgraded to new exclusive rights, no further modifications are made, and each of them remains the content of the original subordinate right, that is, each new exclusive right is an unmodified claim; In case B, after the original parallel subordinate rights are upgraded to new exclusive rights, at least one of the new exclusive rights is further restricted, that is, at least one new exclusive right is no longer an unmodified claim.
In case A, since the amendment process is simple and straightforward, involving only the deletion of original right 1, it is also not controversial that the number of new exclusive rights should be accepted, although the number of new exclusive rights has increased, and of course it is also in line with the "requirement regarding the purpose of amendment" specified in this case.
As for case B, whether the new exclusive right should be accepted is currently more controversial. This was actually the case with the new right 4 in that case.
In the author's view, there is no essential difference between case B and case A. Based on the clear "requirements for the purpose of amendment" in this case, both case A and case B are amendments made by the patentee in response to the reason for invalidation that the corresponding claims do not have novelty or inventive step, but the number of claims responded to by way of modification is different. There is no such thing as a response modification for a non-existent respondent. Therefore, if all the new monopoly in case A can be accepted, then all the new monopoly in case B should also be acceptable.
In summary, it can be seen that judging by the "responsive requirement" in the "requirements for the purpose of amendment" specified in this case, a more reasonable and fair result can be obtained, and it is also more operable.
VI. Conclusion
Therefore, the question of whether the amended claims can be accepted as the basis for examination has always been one of the priorities of all parties, and it is also a prerequisite for whether a reasonable and fair judgment can be made and the interests of the patentee and the public can be balanced. The release of this case has obviously helped to straighten out the issue.
First of all, by confirming that new rights 4 and 7 should be accepted as the basis for examination, this case has at least sent a positive message to all sectors of society, that is, in the case of a "further qualified" amendment, an absolute judgment should not be made directly by looking at whether the number of independent claims increases, and even if the number of independent claims increases, the new independent claims may be accepted as the basis for examination.
Secondly, this case clarifies at least several aspects that should be involved in the issue, especially the "responsive requirement" in the third aspect, "requirements for the purpose of amendment", and makes a judgment by distinguishing between reactive and non-responsive modifications, which is more operable for solving the problem and the results are more reasonable and fair.
In addition, the case also proposes to make an absolute judgment on whether the claims are unamended, but the author believes that this standard of judgment is not applicable to any occasion, and if the case can take note of this and adopt more rigorous wording, I believe that the guiding significance of this case will be more extensive.
Author: Lv Zhanzhu
编辑：Eleven